Examination Guidelines on Patent Eligibility

The US Patent Office has released a new set of guidelines for judging patent eligiblity based upon the Supreme Court’s recent quartet of Bilski, Mayo, Myriad, and Alice. The guidelines do not carry the force of law but are designed to serve as a manual for examiners when determining eligibility.

The guidelines follow the same two-step analysis described in Mayo and Alice. And, although the two-step test was not applied directly in the cDNA case of Myriad, the guidelines suggest that the test is uniform across the subject matter areas. However, the particular examples show that the USPTO intends to be less aggressive at finding eligibility problems with products of nature or natural phenomenon as compared those directed toward abstract ideas.

These guidelines are a more timid version of previous guidelines written to appease the unlawful decision in Ultramercial III. However they do not take into account the recent DDR decision in which the majority intuitively considered the claims as an “Integrated” whole, and followed with a subsequent preemption inquiry to determine that the claims did not cover the building blocks of human ingenuity.

Notice these guidelines only tepidly mention claims as a whole (Integrated) and outright ignore preemption, as the the Ultramercial III panel did.

However, Integration remains the law of the land until the Supreme Court says otherwise.

And for all of the anti patent lobby popping corks of champagne, remember, the Ultramercial panel is not THE three. And even if they were, never forget, 3 the new 4, still does not make 5.

Below, you state that a claim that recites “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” is patent eligible.

To defend this, you cite Diehr. Respectfully, you have not internalized either Mayo or Alice. Mayo provides the framework. Alice applies the framework to computers.

One of Alice’s explicit holdings is that the implementation of an abstract idea (or law of nature) on a generic computer is not enough to meet step two of Mayo.

I agree that Diehr remains good law, I would suggest it is a case wherein there was ‘enough’ to meet prong 2 of Mayo. You should focus your efforts on distinguishing Diehr from Alice: why was the claim in Diehr eligible but the claim in Alice not?

The claim I recited simply has no chance. It is explicitly the application of an abstract idea on a genetic computer.

go author: the problem here is that step 2 of Alice is a 103 analysis which over rules Graham. But, so you would agree with us if there was something more that transformed it into patent eligible subject matter (to use the gooey gunk language of the justices who formerly had respect).

So, one can use 103 properly or Alice and by-pass the 1952 Patent Act.

I think I agree with what you’re suggesting. If there is ‘something more’ in the claim other than an abstract idea, the claim is eligible (Mayo step 2).

I also think (maybe you agree) that the question of: What is something more? is the most ambiguous part of the Mayo test. I think Alice is clear that generic implementation on a computer is NOT enough, but I don’t know for sure, in the abstract, what IS enough.

Diehr makes me think that the MOT test is an important clue in ‘what is enough,’ but as our friend anon would point out, it is only a clue…

You are wrong again. I didn’t cite Diehr. I cited Mayo which reconfirmed Diehr as controlling precedent. And as Mayo told you, the reason Diehrs claims were patent eligible was because the claims were, “integrated.”

And as I told you “Integration” is the reason your hypothetical can be eligible. The same “Integration Analysis” applies to Alice as well.

What you have done is completely ignored integration. But no matter how you ignore it, and/or feign ignorance, integration is indelibly etched in Supreme Court precedent and only the Court itself can change that now.

Richard wrote: “If we allow A to claim a computer configured to calculate the attraction between two particles according to Newton’s law of gravity, however developed, we are effectively granting A a patent over not only A’s discovery, but also taking B’s discovery. That would be plainly against the clause “To promote the Progress of Science and useful Arts.”

First, your Constitutional hypothetical did not show how software, computers or business methods are not within the useful arts. Nor did you show were the Constitution says that an exception, such as Newtons Law, is unconstitutional when “Integrated”. When subject matter is legally “Integrated”, it is not claimed, as “however developed”. So that argument fails as well. Furthermore, simply filing a patent first, before another inventor who discovers the same thing, does not prevent the Constitutional mandate to “promote the progress”, as you imply. All inventor B would need to do is file an Improvement patent, and innovation continues to progress.

So, let’s be real here. This is abstract art that is supposed to be the first “purely” abstract art. These supposedly “abstract” claims do not correspond to the abstract art. The supposedly “abstract” claims clearly convey structure and meaning to known elements.

Seriously think about this. Are these claims really abstract in any sense other than that the SCOTUS has made up a new word and overloaded abstract with a new meaning: any judge can invalidate any claim if they don’t like it.

I think you’re almost there, NWPA. Let’s talk about Mayo because it is a ‘smelly art’ as you like to say.

Think about what the people in Mayo were actually doing. Administering drugs, sampling blood, measuring concentrations of chemicals. All pretty tangible stuff. No one would argue there is anything ‘abstract’ about what the parties there where doing.

BUT….and this part is absolutely critical…the CLAIMS amounted to protecting a correlation, which is an abstract idea. The claims were therefore ineligible.

Just as a reminder: here is the claim:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

“(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.” 623 patent, col.20, ll.10-20, 2 App. 16.
****

Can you see that while the infringing activity was not abstract (it included real world steps) the claims themselves protected an abstract idea? That difference is critical. Once you get this aspect of Mayo, you can apply the same analysis to information processing claims in much the same way.

There is nothing abstract about the correlation. And I will go further and say that Mayo was absolutely decided wrongly. Methods of treatment are eligible, but here they have actually figured out how to adjust the properly level of treatment without iteration and they are penalized for it.

Imo all “correlations” are abstract because they are merely how we humans are observing the correlated activity to date SO FAR. But in the USSC’s opinion they settled on lawl of nature or natural phenom iirc. In any event, whatever the correlations are in that case, they are judicially excepted.

Not really 6. My guess is that this nonsense will get legislated out or overturned in the next 20 years. This is just nonsensical crxp the SCOTUS generated so that judges can kill any patent they want.

The discovery of a principle in natural philosophy or physical science, such as hot air would promote the ignition of fuel better than cold, is not patentable. O’Reilly v. Morse, 15 How 62, 116 (1852). The reason being that the principle must be regarded as well known according to Neilson v. Hardford; Parker v. Flook, 437 US 584, 592 (1978).

Someone wrote: “Can you distinguish the “integration” of those claims in Alice over the “integration” of the Newton example above?”

While it is correct the exception in Alice claims was “Integrated” in a computer system, therefore doing more than Bilski, which was only Integrated in a math equation, at best, the claims as a whole preempted the exception on a computer, in effect doing no more than Benson, and less than Diehr. However in the Newton hypothetical, you are landing a spaceship on the moon. And that is significantly more. And you know it’s significantly more because the calculation is “Integrated” so that the equation itself is not preempted by the all the steps of the claim. This, “integration analysis” has been the framework of every Supreme Court case since Diehr. And, as evident, no one can refute it.

Well, I agree with you here to some extent. IF you believe some information processing claims are patent eligible (encryption is a common example), separating the eligible claims from the eligible claims can be ambiguous in some cases. I don’t think that means the Mayo test is unworkable. Case law just provides the guidance on the exception, like a million other areas in law. But I’ll grant you that it isn’t always easy.

But the law of nature exception, as shown in Mayo, seems pretty straight forward.

I mean, if a claim recited “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” I assume we could agree this claim protected a natural law, and there isn’t a whole lot of ambiguity about that? Maybe there is something I’m missing here, but laws of nature seem pretty easy to spot.

“I mean, if a claim recited “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” I assume we could agree this claim protected a natural law..”

You assume wrong. Newtons law in that example is “Integrated” same as Arrhenius equation was in Diehr. Therefore it would be eligible. And you can’t cite any Supreme Court case law, Congressional statute, or Constitutional clause, that says different.

I don’t think there is a problem with the program. The scope of enablement is what the inventor deserves and only if it is nonobvious (among other things.) With your hypothetical it would be obvious so the claim shouldn’t be allowed.

I’ve challenged people to come up with one example where witch word “abstract’ has been used where 103 would not have done the job. Not one set of claims yet.

1. Step 1 of Mayo, the claim is directed to the abstract idea of Newton’s law, a law of nature. Laws of nature are not patentable.

Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are `manifestations of … nature, free to all men and reserved exclusively to none.'” Chakrabarty, supra, at 309, 100 S.Ct. 2204 (quoting Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948)). (FROM MAYO)

2. Generic use of a computer is not enough to render the claim patent eligible.

We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit. ALICE
******

“In Diehr, the
overall process was patent eligible because of the way the additional
steps of the process [integrated] the equation into the process [as a
whole. ]450 U. S., at 187. These additional steps transformed the
process into an inventive application of the formula. ) [MAYO
COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S.
(2012) 3 Syllabus] (Emphasis Added).

You cited nothing that overturned this explicit analysis and holding of the Supreme Courts precedent by the Court itself.
And until the Supreme Court of The United States says otherwise, the law is as follow, any inventor that applies and “integrates” any new and useful law of nature, natural phenomenon, or abstract idea into a process, manufacture, machine, or composition, has patent eligible subject matter.

And there is no one on this blog, or the next, or any court that can cite any Court case law that says different. Swallow it.

“You assume wrong. Newtons law in that example is “Integrated” same as Arrhenius equation was in Diehr. Therefore it would be eligible. And you can’t cite any Supreme Court case law, Congressional statute, or Constitutional clause, that says different. Deal with it.”

Case Law:
A procedure for solving a given type of mathematical problem is known as an algorithm. Gottschalk v. Benson, 409 US 63, 65 (1972). The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. Id. at 71-72.

A process to calculate the attraction between two particles according to Newton’s law of gravity is simply an algorithm or procedure to solve a math problem. Adding a computer to “calculate it” is not “something more” required by Alice since recitation of a computer is a generic “apply it”.

Further, such claim would be a generalized formulation for programs to solve mathematical problem just like the binary conversion in Benson. Benson, 409 US at 65. It is the specific application from that generic formulation that is patent eligible, not the generic formulation itself.

Constitutional Clause:
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Suppose A discovered program application #1 of using a computer configured to calculate the attraction between two particles according to Newton’s law of gravity.

Further, suppose B, but not A, discovered program application #2 of using a computer configured to calculate the attraction between two particles according to Newton’s law of gravity.

If we allow A to claim a computer configured to calculate the attraction between two particles according to Newton’s law of gravity, however developed, we are effectively granting A a patent over not only A’s discovery, but also taking B’s discovery and made it A’s.

That would be plainly against the clause “To promote the Progress of Science and useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries.

Richard, were you run afoul of the law is failing to view Benson through the lens of Diehr, as Bilski at 14 said to do. And when you view Benson as controlled and cabined by Diehr you look for in this case, equations, to not only be applied, but “integrated” so that the claim does not preempt the equation itself. (See Mayo).

Integration is what makes the use of Newtons famous law eligible subject matter.

Now Richard, you are correct in that merely using a computer to caculate Newtons equation would not allow you to patent the equation any more than if you had worked the problem with pencil and paper.

However, let’s say you are using the leapfrog finite difference approximation system to numerically “integrate” Newtons equations for an astrophysical simulation of gravitational pull to land a spaceship on the moon. In this case you have yourself a patent eligible process. The fact that you may need one more computers to run the process, and have steps to calculate and maintain time, update velocity and impact in order to safely land the ship would in no way negate the eligibility of the claims as a whole. Again, see Diehr. And nothing in Alice changed Mayo, Bilski, or Diehr. Indeed, Alice reiterated, the lntegration Analysis from Mayo. See Alice, page 6, paragraph 3. And you can take that to the bank. Or in this instance, the Supreme Court of The United States!!!

Under your analysis the claims in Alice would have been found eligible. Have you read the claims in Alice? Can you distinguish the “integration” of those claims in Alice over the “integration” of the Newton example above?

I think Go Arthur if you spend time thinking this through you will see I am right. I know people that do research who have said well then why would we look for these correlations. We can’t work for free.

“BUT….and this part is absolutely critical…the CLAIMS amounted to protecting a correlation, which is an abstract idea. The claims were therefore ineligible.”

You are wrong Go Author. A naturally occurring correlation, is just that. A naturally occurring correlation. Or as the Court says, a Law of Nature. Neither is abstract. Prometheus claims covered/protected a law of nature in the form of a naturally occurring correlation, which is a Court created exception. And that is why they were ineligible. Must important for you to understand is that software is NOT abstract, a law of nature, or p
natural phenomenon, and therefore is not a Court created exception. Same goes for business methods.

An algorithm or procedure for solving a given type of mathematical problem is a generalized formulation for programs to solve mathematical problems. Gottschalk v. Benson, 409 US 63, 65 (1972). From the generic formulation, programs may be developed as specific applications. Id.

He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. Funk Bros. Seed Co. v. Kalo Co., 333 US 127, 130 (1948).

Based on the above, if claims are drawn to a program that was developed as a specific application of a generic formulation, then that program is patent eligible.

There the correlation was that the concentration of a certain chemical in the blood above a certain amount meant you gave the patient too much of the drug. Similarly, a concentration of a the chemical in the blood below a certain amount meant you gave the patient too little drug.

From Mayo:

“Prometheus’ patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6-TG in the blood (of a 1297*1297 patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×108 red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.”

Having read the second file of chem/bio composition-related eligibility guidelines, I must say that the authors of that document come across as a hundred times more thoughtful and articulate than the document with Lee’s name on it. I’m not particularly surprised by that … but it is disappointing that the PTO can’t step up its game when it comes to describing the eligibilty issues raised by information processing nonsense. It’s not like people haven’t been discussing this stuff for decades.

With respect to the “mdc_examples_nature-based_products” guidelines, at first glance it seems internally consistent and consistent with the widely held (and reasonable) belief that neither Myriad nor Mayo represented even a modest assault on the patenting of new man-made compositions. Myriad is treated as a very narrow hurdle and Mayo, of course, is concerned with tying up ineligible information with methods.

My two major criticisms of the “nature based guidelines” are

(1) the lack of any attempt to “drop the other shoe” so that applicants are aware that some of these “eligible” claims are per se failures under the other patent statutes (or otherwise extremely unlikely to be unpatentable). Why not just come out and say so in a single sentence and help applicants save some money and time? Why force them to read five other documents of “guidelines”?

(2) the lack of any serious, coherent attempt to address the eligibility issue created when an applicant uses multiple overlapping claims — each of which may be deemed eligible according to the USPTO’s current guidelines — that have the combined effect of achieving exactly what the eligibility restrictions are intended to prevent, i.e., blocking all practical applications of the naturally occuring product in question.

Lastly (and somewhat off the topic of the natural compositions guidelines) I didn’t see where the PTO has addressed directly the issue of “field limited” uses of old information-gathering technology, i.e., broad claims that “limit” a composition or machine to a previously undisclosed use where that use falls squarely within the genus of understood purposes for the technology (e.g., use of a microscope or a probe to study previously subject matter that wasn’t previously described in the art). Perhaps the PTO believes that’s more of an obviousness inquiry, or a utility inquiry. Either way, the limitless granting of such claims tends to keep old data-gathering technology out of the public domain (where it belongs).

As noted below, the guidelines are clear that the following categories of “innovations” are ineligible for patenting as abstractions.

comparing new and stored information and using rules to identify options

• using categories to organize, store and transmit information;

• organizing information through mathematical correlations

Here’s a practical question: client comes to you with an “improvement” for a robot car which consists of software that takes information collected by car (and any peripheral devices associated with the car, such as satellilte information), categorizes that information, then compares the received information with information in a “look up table”, where the table provides the appropriate response to be taken by the car in response to the information. The client is particularly excited because the specific information in question relates to different classes of injured animals that are found lying in the road, further categorized by the degree of injury.

The client has not written any software and the client is aware that “no case law” requires that any software be written. It’s not clear that the client has ever programmed a compuer before. The client says that “Google is going to do something like this and I want to be ready to cash in when they do.”

You understand that the “innovation” is ineligible but you really need the money. Besides, some guy on a blog says that he is still “getting claims through” the PTO.

Question: What “magic words” do you insert into the claim so that you can obtain this unenforceable patent for the client?

well, first you do a little search (which of course didnt actually happen, and nobody can prove did happen *wink wink*) to find a collection of vehicle components that covers virtually any vehicle configuration on the market, BUT *and this is the important part* would force an examiner to put together at least a two reference 103 to meet. Then you toss in your software parts. Maybe spruce it up with some language *fleshing out* the relationship between some well known processor and memory components, including some inherent signaling between components is a plus.

Wait for the non-final with the 101.

Argue, and make it lengthy 10-12 pages or so of argument on art and 101 and dont amend (this scares the new examiners). Maybe you get lucky and he gives you a second non-final to try and make you happy (silly examiners), but he keeps the 101. Make a conciliatory amendment that doesnt move the ball. Examiner gets excited, and goes final.

File a pre-appeal.

Now the game has really started because its a roll of the dice of whether you get a SPE that doesnt want the extra work of reviewing an appeal brief or dealing with complaints, and subsequently tells the examiner to “just give them another action” (happens all the time *wink wink*). Now we are at possibly a third non-final but definitely a second. Retort with another lengthy set of arguments, no amendment.

Now the examiner is stuck.

He knows that going final means having to write another non-final because its going to be pre-appeal time again, and he also knows that writing too many non-finals raises red flags about his quality. His next logical step: hit up his primary/SPE for an allowance to end the suffering, and he will start the conversation with: ive already reopened once and have done two/three non-finals. SPE shrugs and says “we gave it our best shot, and it doesnt look too abstract to me anyway, you are probably being too strict on those”.